Tag: domain squatting

Domain names are invaluable digital assets in todays world. Over the last few months, dotNice have been following the epic saga between Lucasfilm (now owned by Disney) and an established online retailer of fancy dress attire, Abscissa. The story begins over a decade ago when Abscissa registered various domain names including starwars.co.uk to attract online consumers searching for star wars paraphernalia and product goods to it’s webpage. Over the course of ten years, the online retailer used the domain to sell Star Wars related fancy dress attire. The common term given to such behaviour is domain-squatting or cyber-squatting which describes the act of registering or trafficking in a web address with bad faith intent to profit from another party’s trademark. Over the course of July this year, Lucasfilm (Disney) litigators pursued Abscissa to enforce their IP rights and were successful in their endeavours. Following the ruling of Nominet (the UK’s domain name registry) six different domain names, originally registered by the third party, were recovered by Disney and added to their existing portfolio of digital assets. Domain disputes like the debacle are in no way a recent phenomenon.

Although a domain name can easily be registered at a relatively minimal cost today, the terms of what constitutes infringement or intellectual property violation can be a little more complicated.
In order to successfully recover a domain name from a third party, the following conditions must clearly proven:

1. the complainant must have a trademark registered (related to the domain in question).

2. the defendant’s registration must be deemed as ‘abusive’ of the complainants rights or infringe on it’s proven intellectual property. In other words, it must be proven that the defendant registered the domain in bad faith for the purpose of leveraging another trademark owners brand equity.

What can brands do to prevent such cases of cyber-squatting?

– ensure you have your marks registered in all countries you operate in internationally

– Invest in building your domain name portfolio to avoid opportunistic domain squatters registering domains similar to your brand

– monitor keywords related to your brand and domain names to ensure you are aware of any dubious domain registrations

– Take swift action once infringement or ip violation has been identified.

Disney’s determined enforcement of their intellectual property rights should be emulated by all brands with an online presence. Failing to establish an effect digital brand protection strategy will ultimately negatively impact on a businesses bottom line.

In 2012 the most powerful man in the world, US president Barack obama, fell victim to cybersquatting/ domain squatting. Before the Presidents advisors could announce that they would be turning the remainder of reelection campaign funds into a new nonprofit, Organising for Action, savvy cybersquatters saw the great financial potential in securing the domain name first. They claimed organisingforaction.com and organisingforaction.org beating the president to the punch!

2. Bank of America

One of the worlds most lucrative banks, Bank of America was involved in a high profile case of cybersquatting when opportunistic domain squatters saw the potential in strategically buying domain names for possible future bank mergers and subsequently selling them on eBay.The domains for sale included bankofamericamerrilllynch.com and bofaml.com.

3. Youtube

Global giant, Youtube was targeted by typo-squatters in a highly publicised corporate typo-squatting case. The domain name yuube.com was bought with the sole purpose of targeting YouTube users, anticipating that a large amount of YouTube traffic would mis-spell the domain name. When a user accidentally typed yuube.com they would be redirected to a malicious website or page.

4.American Express

A high profile case of phishing occurred when fraudulent emails purportedly from Global corporation, American Express were sent to an unknown number of recipients. A simple DNS change could have been made to thwart this spoofed email, but American Express failed to make any changes.

5.Burger King

Burger King fell victim to a bad case of brand-jacking when the company’s logo was hi-jacked and replaced with an advertisement of it’s main competitor, McDonalds. Promptly after this, a fraudulent ‘news’ story followed purporting that Burger King had been sold to its rival Mc Donalds as a result of persistent drug use of its employees. The hack lasted for approximately an hour until the twitter account was suspended.

There has been much talk over the last few years of the importance of digital marketing, how to create online marketing strategies, how to grow your online client base and following, how to build a brand’s online presence and how to conduct customer service via digital channels like twitter and Facebook. However there is very little conversation on the topic of how such brands’ can be protected once they have been established online. Businesses allocate massive marketing budgets to drive their digital presence. It would naturally make sense to safeguard your brand after so much capital has been invested. Some of the topics we shall be discussing over the coming weeks and months will cover the preventative measures your business can take to avoid such risks as brand reputation, revenue loss and of course legal litigation.

A key area of discussion over the next few months will focus on Domain Portfolio Management. Over the past year major developments and changes have rocked the world of domain names with ICANN , (Internet Corporation for Assigned Names and Numbers) releasing some 1,500 new domain names.
For instance, the music industry has just introduced .band as a new domain name available to online vendors. For yoga enthusiasts and teachers, the domain name .yoga was recently released; A plethora of new and unique domain names including .organic, .buzz, .beer even .wtf have recently been added to the domain name reservoir. This development can present great opportunities for brands endeavouring to expand and grow their online presence. It will allow enterprises to further develop targeted personalised marketing campaigns to new prospective clients and existing client bases. Needless to say, such transformations in the global domain registerary also possess threats to existing businesses. Opportunistic domain squatters may pre-emptively purchase a number of domain names that they imagine would hold equitable value to global brands. The news that Ashton Kutcher recently purchased a number of domain names for his baby daughter before she was even born, highlights the growing importance of reserving a domain name and also the growing awareness of online intellectual property. Brands must immediately consider how their domains are being managed, if at all!

Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that securing domain names is a high priority. This has been happening many years and global brands are only now waking up to the extent of this problem. Companies that have won back their names from alleged cybersquatters following rulings from WIPO include Christian Dior, Nike, Deutsche Bank and Microsoft. Brands need to be aware of not only their current markets but also their potential markets. They need to protect themselves in both prospective future markets in addition to existing markets they currently operate in. Staying one step ahead is of critical importance.

Another issue our blog will discuss over the coming months is the problem of
Typo-squatting. Typo-squatting is similar to cybersquatting and is based on the probability that a certain number of Internet users will mis-spell or incorrectly type the name of a Web site (or actually its URL) when surfing the Web. For example, a common misspelling or a foreign language spelling. Back in 2006 to 2008, there existed an typo-squatted variant of Google listed as ‘goggle.com’. Landing on this fraudulent website would automatically cause the domain to download computer viruses and other destructive software including the dreaded antispyware program SpySheriff.

Another potential problem facing online brands is Phishing. Phishing involves opportunistic cybercriminals installing malicious software or stealing personal information off of your computer. Like fishing, cybercriminals essentially ‘Phish’ for important data through creating fraudulent email messages, websites, and phone calls. A highly publicised instance of this occurred in 2008 when an online fraudster claimed to be the renowned actress Scarlett Johansson and set up a fake competition whereby she ‘offered herself’ in a threesome with two of the competition winners. The object of the online imposter was to harvest email addresses of the unknowing competition participants.

Another fast evolving form of cyber-crime is brand jacking. Brand-jacking is a particular form of cyber crime whereby someone assumes the online identity of a person or brand with the intention of stealing the organisation or persons brand equity. An example of this happened to US Republican Sarah Palin and US President Barack Obama whereby falsified Facebook pages were created to damage their online presence. Furthermore, in 2006 a fake advert for a Starbucks Frappuccino was devised by an anonymous brand jacker who sought to damage the brands reputation. The objective was to highlight the contrast between consumption and poverty. Such parodies can ultimately destroy a brands equity as social media facilitates the rapid and viral dissemination of such fraudulent material.

In many cases the examples quoted above could be avoided if certain steps had been taken to carefully and thoroughly protect the brands listed. It often occurs that SMB’s and large corporations find themselves having to take costly legal action to fix what originally was a preventable problem. Enormous costs can be incurred if enterprises fail to implement and revise their digital brand protection strategy. In the year 2000, global brand Kodak won back its rights to kodak.ru after a long, tedious litigation process lasting a year and involving some twenty lawsuits. A further example of this occurred when multinational corporation Verizon won a $33 Million dollar lawsuit retrieving it’s domain name myverizonwireless.com from domain-quatters. These global brands had the financial means to pursue such costly litigation, many scaling brands establishing their online presence and scaling their business would not have such capital available.

Whether you’re an SMB or a large multinational, whether you work in the Tech industry or the entertainment industry, the same principles apply. Being prepared is key to guarantee your brands online presence and digital footprint is safeguarded.

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